Patent Decisions

Motion to amend protective order for purposes of new litigation
refused

In this motion, Novartis sought to amend a protective order that
was issued on consent in the context of an application proceeding.
The amendment would allow Novartis to use samples it obtained from
Mylan and the expert affidavits setting out the results and
analysis of tests performed on those samples for the purposes of
litigation taking place in Portugal. The Portuguese proceedings are
between Novartis and a company related to Mylan and involve the
same rivastigmine transdermal patches. The evidence showed that
samples of Mylan's patch were produced in the Portuguese
proceeding, but that under the applicable procedural rules, testing
was conducted by an independent laboratory, according to a protocol
designed by a jointly selected expert. Novartis, dissatisfied with
the protocol that was adopted, has tried several times to have the
joint expert authorize tests similar to those Novartis conducted in
the Canadian PM(NOC) proceedings. Novartis' request has been
refused every time. Thus, Novartis seeks an amendment in order to
introduce the testing evidence from the Canadian PM(NOC)
proceedings directly in the Portuguese proceeding, should the
Portuguese panel permit that evidence be adduced in that
proceeding.

Given that the production of the samples in the Canadian
proceeding was entirely voluntary, the Court found that the
appropriate test to apply in this motion was the strict test of
Smith, Kline and French Laboratories Ltd v Canada (Attorney
General) (1989) 24 CPR (3d) 484. The Court noted that its
determination might have been different if the information at issue
had been contained in documents that could have been compelled,
however, the Court did not need to make that determination in this
motion.

While the protective order provided that information could be
used in any related proceedings, the Court noted that it was clear
that the Portuguese litigation was not a proceeding related to the
PM(NOC) application since:

It is completely independent from the
prohibition application;

It proceeds independently;

The determination of this application
does not affect the Portuguese litigation and the determination of
the Portuguese litigation does not affect this application;

The two proceedings have no
consequences on each other nor do they give rise to rights that may
be recognized, enforced or contested through the other
proceeding.

The Court also noted that at the time the protective order was
negotiated between the parties, Novartis was aware of the existence
of the Portuguese proceedings. The Court found that the potential
relevance of the samples in the Portuguese proceeding was
conceivable, and therefore, there was no change in circumstances
that could justify a variation of the protective order. The Court
dismissed the motion. The Court would have come to the same
conclusion even if the Smith, Kline and French test was not
applicable or displaced in favour of the test in Juman v Doucette, 2008 SCC 8, which requires
careful weighting of the public interest asserted by the person
seeking relief against the public interest in maintaining the
confidentiality of the information.

NOC Application and Impeachment Action Consolidated

Apotex served an NOA alleging non-infringement and invalidity.
Shire filed an application for a prohibition order. Apotex then
started an action to impeach the patent at issue, and for a
declaration of non-infringement. Shire asks the Court to partially
consolidate the proceedings. Apotex opposes the motion, and instead
proposes that Shire discontinue the prohibition application, and
allow the action to continue to its conclusion. Apotex also
proposes that if its product becomes approvable, it would remain
out of the market until a decision is rendered, on the basis of an
undertaking from Shire for damages. Apotex concedes that the Court
has no jurisdiction to impose its proposal without consent. On the
motion, Apotex argued that both proceedings should proceed in
parallel to separate hearings. At the hearing, Shire proposed that
the proceedings proceed as in Gleevec (2013 FC 142).

The Court considered the merits of Shire's proposal as well
as Apotex' arguments of prejudice. The Court held that if the
two proceedings had a common evidentiary record, the Court could
apply the correct burden of proof to both the application and the
action, thus, Apotex would suffer no prejudice in this regard. The
Court recognized that strategies and tactics may be different as
between actions and applications, but held that Apotex did not
explain how the loss of any of these elements would be prejudicial.
The Court held that all of Apotex' substantive rights would be
protected if Shire's proposal were to be adopted. Furthermore,
there would be very significant savings of time and expense for the
parties as well as a judicious use of the Court's resources.
The Court noted that Apotex has full control over the timing of the
two proceedings and held that Apotex cannot impose its own schedule
on Shire and the Court while at the same time resisting reasonable
and just means to make the most efficient use of scarce judicial
resources.

Thus, the Court heard that the two proceedings be heard at the
same time and by the same judge. Furthermore, the Court held that
the issue of whether the allegations in the NOA are justified shall
be decided on the basis of evidence led at the trial of the action.
Furthermore, evidence regarding the assertion that the NOA is not a
valid NOA shall be adduced at the trial of the action.

Copyright Decisions

Appeal of decision granting an interlocutory injunction
dismissed

This was an appeal of the Federal Court's decision granting
an interlocutory injunction to prevent the Appellants from among
other things, advertising for sale, distributing and selling
preloaded setup boxes that are adapted to provide users with
unauthorized access to the Respondents' programs (2016 FC 612;
our summary here).

The Appellants focused their argument on the second prong of the
tripartite test for an interlocutory injunction. The Appellants
submitted that the Court had misconstrued the criterion for
irreparable harm since there was no clear and non-speculative
evidence on which the Court could conclude that the Respondents
would lose actual or prospective clients as a result of the
Appellants' activities. They also argued that there was no
evidence that they were unlikely to have the financial resources
required to compensate the respondents' losses should they
succeed on the merits.

The Court of Appeal dismissed the appeal, finding that it was
open to the Federal Court to conclude as it did.

Trademarks Decisions

The Federal Court dismissed an appeal of the Trademarks
Opposition Board's ("Board's") refusal to
register the mark TASTE OF B.C.

In the opposition decision, the Board found that it was
reasonable in all circumstances for the Applicant to be satisfied
of his entitlement to use the mark throughout Canada. The
Respondent, Taste of BC Fine Foods Ltd, had entered into an
agreement with the Applicant for a sale of assets, as well as a
licence to use the mark TASTE OF BC and the store name for a period
of six months. A second agreement was entered into by the parties,
which allocated part of the purchase price for goodwill, but
provided no definition of goodwill and no reference to a trademark
licence. This was followed by a series of disputes between the
parties. The Board's interpretation of the first agreement and
its finding of ongoing disputes between the parties concerning the
mark established that it was unreasonable for the Applicant to be
satisfied of his entitlement to use the mark as of the filing date
of the application. With respect to the issues of non-entitlement
under paragraphs 16(3)(a) and (c) of the Trade-marks Act, the Board
found that the Respondent had established the use of the TASTE OF
BC trademark prior to the Applicant's filing date and that
there was no abandonment as of the advertisement date. Given the
near identical marks, the association of the goods with the
Respondent's mark and the near identical channels of trade, the
Board also concluded that the Applicant failed to show that there
was no likelihood of confusion.

On appeal, the Court concluded that there was no new material
evidence which justified reviewing this matter of trademark
registration de novo. For the most part, the Applicant's
"new evidence" was either given no weight, or failed to
add anything material to the dispute. The Court also concluded that
the Board's decision was reasonable.

On the issue of costs, the Court noted that the expense of this
proceeding, and related proceedings, had long ago overshot the
purchase price of the assets. The Court also pointed out that
"[t]he Applicant has been dogged in his pursuit of this trade
name, capitalizing on the gap created by the Respondent's
failure to seek registered trademark protection". However, the
Court refused to award costs on a solicitor-client basis, finding
that the Respondent bore some of the responsibility for not
protecting his trademark asset.

Expert reports excluded for failing to meet standard four part
test from Mohan

This recently reported motion considered the admissibility of
expert reports, within the greater context of the Plaintiffs'
argument that the Defendants are not "public authorities"
as contemplated by subparagraph 9(1)(n)(iii) of the Trade-marks
Act. The Defendants argued that the reports were inadmissible for
two main reasons, namely that they were: (i) unnecessary; and (ii)
subject to a rule of exclusion, as opinions on domestic law. The
Court agreed with the Defendants that the reports failed to meet
the standard four part-test from R v Mohan, and ordered that the reports, and
their authors, be excluded from the upcoming trial.

On the issue of necessity, the Court noted that the admission of
expert opinion evidence is the exception, not the rule. In an
effort to satisfy their onus to demonstrate necessity, the
Plaintiffs claimed that the reports: (i) assisted the Court in
understanding the operation of provincial statute; (ii) saved the
Court's time and resources; and (iii) were accurate and
complete. Contrary to the Plaintiffs' submissions, the Court
found that the reports failed to meet Mohan's necessity
criterion and were, for that reason alone, inadmissible.

The Court also concluded that the reports failed to meet the
third criteria from the Mohan test, namely that they were subject
to the exclusionary rule on domestic law evidence. The Federal
Court of Appeal in Ontario Association of Architects v Ontario
Association of Architectural Technologists, 2002 FCA 218
[Architects], set out a two part test for a "public
authority" under subparagraph 9(1)(n)(iii), namely that the
public authority (i) be subject to significant government control
and (ii) benefit the public. The Court found that the reports went
beyond factual or contextual considerations, and drew legal
conclusions on whether the degree of government control met the
threshold of "significant". The Court held that the
reports were inadmissible as they ultimately provided a legal
opinion of the test established in Architects case.

Many entrepreneurs and small business owners exhibit an extraordinarily high level of motivation. They are individuals with the wide-ranging skill set that is necessary to achieve success in their chosen field.

The Federal Court of Appeal has recently confirmed the decision of the trial judge and dismissed an appeal from a decision which found that use of the business name "Time Development Group" infringed...

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